Looking at Patent Law: A Case Study Regarding the Patenting of a Plating Cell Invention, Part I — From Conception to Published Patent Application

Abstract

This installment of the semi-regular column on patent law presents part one of a case study of an electrochemical cell invention. The case study begins with the preparation of an invention disclosure for review by management of the organization or the university technology transfer office. Once the decision to file a patent application is approved, the invention disclosure is the initial document used for interaction with patent counsel. The patent counsel generally drafts the patent application for review by the inventor(s) and submission to the United States Patent & Trademark Office (USPTO). In addition, patent counsel manages the interaction between the inventor(s) and the USPTO. Part one concludes with the publication of the patent application. The intent of the authors is that the subject case study will enable electrochemical scientists, engineers, and technologists to better understand the invention to patent application process.

Journal Patent Citations – A New Paradigm for Journal Quality?

“…The inventors are under the obligation of the "Duty of Candor" to disclose to the USPTO all prior art that is materially relevant to the subject invention and, at the same time, warned not to "bury" the examiner with irrelevant prior art citations. 8 The examiner searches for additional prior art relevant to the patent application in terms of the novelty and non-obviousness of the invention. The examiner does not consider the reputation of the authors of the prior art, the reputation of the journals where the prior art is published, or the reputations of the institutions where the invention originated.…”

Looking at Patent Law: Defining the Meaning and Scope of Claims through Claim Construction; Insights from the Lithium Battery Patent Infringement Case

“…As described previously in a plating cell invention case study resulting in four U.S. patents at Faraday Technology, Inc., we begin the ID with a problem-solution statement 17,18…”